Apple Inc. v. Samsung Electronics Co., Ltd. et al

Filing
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United States District Court
For the Northern District of California
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAN JOSE DIVISION
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APPLE INC., a California Corporation,
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Plaintiff,
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v.
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SAMSUNG ELECTRONICS CO., LTD, a
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Korean corporation; SAMSUNG
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ELECTRONICS AMERICA, INC., a New York )
corporation; and SAMSUNG
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TELECOMMUNICATIONS AMERICA, LLC, )
a Delaware limited liability company,
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Defendants.
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Case No.: 12-CV-00630-LHK (PSG)
ORDER GRANTING-IN-PART
SAMSUNG’S MOTION TO COMPEL
(Re: Docket No. 146)
In this patent infringement suit, Defendants Samsung Electronics Co., LTD., Samsung
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Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively
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“Samsung”) moves to compel Plaintiff Apple Inc. (“Apple”) to supplement its response to one of
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Samsung’s interrogatory requests relating to Apple’s pending motion for a preliminary injunction.
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Earlier today, the court heard oral argument on Samsung’s motion. Having considered the
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arguments and evidence presented, the court GRANTS-IN-PART Samsung’s motion.
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Case No.: 12-CV-00630-LHK (PSG)
ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL
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I.
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BACKGROUND
Samsung moves this court to order Apple to supplement its response to Interrogatory
Request No. 4. This interrogatory requests that Apple identify all persons to whom Apple has
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licensed, offered to license, or received a request to license, the four patents upon which Apple
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seeks a preliminary injunction (the “preliminary injunction patents”), as well as the current status
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of any of these licensing discussions. 1 Samsung argues that the information is relevant to Apple’s
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assertion that it would be irreparably harmed in the absence of an injunction. 2 Samsung also
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specifically argues that Apple should be obliged to supplement its response to identify all requests
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for licenses of any of the four preliminary injunction patents, even if the request did not reference
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United States District Court
For the Northern District of California
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one of them specifically—for example, any requests to license an Apple patent portfolio that might
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include one of the four preliminary injunction patents. 3
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Apple responds that its interrogatory response as it currently stands is adequate because the
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supplemental information that Samsung requests is irrelevant to the preliminary injunction motion,
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and supplementing its response would place an undue burden on Apple.
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II.
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LEGAL STANDARDS
Parties may obtain discovery regarding any nonprivileged matter that is relevant to any
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party's claim or defense. Relevant information need not be admissible at trial if the discovery
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appears reasonably calculated to lead to the discovery of admissible evidence. The court must limit
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the frequency or extent of discovery if it is unreasonably cumulative or duplicative, or can be
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obtained from some other source that is more convenient, or the burden or expense of the proposed
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discovery outweighs its likely benefit. 4 Upon a showing of good cause, “the court may order
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discovery of any matter relevant to the subject matter involved in the action.” 5
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See Docket No. 146 (Defs.’ Mot. to Compel Further Resp.).
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See id.
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See id.
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See generally Fed. R. Civ. P. 26.
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Fed. R. Civ. P. 26(b)(1).
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Case No.: 12-CV-00630-LHK (PSG)
ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL
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III.
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DISCUSSION
It is clear that, in the absence of any burden to Apple, the supplemental information
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Samsung has requested is at least reasonably calculated to lead to the discovery of admissible
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evidence. The frequency and substance of any license requests, even if ultimately declined or
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ignored by Apple, sheds light both on how those outside of Apple value the preliminary injunction
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patents, as well as how Apple itself values them. This is more than conceptually pertinent to
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Apple’s willingness to license the patents, 6 because even a well-resourced party like Apple is
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subject to the microeconomic maxim that supply tends to increase as does price.
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Of course, the initial premise of this discussion, that Apple has no burden in complying
United States District Court
For the Northern District of California
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with Samsung’s request, is false. Apple very much confronts a substantial burden in collecting and
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reviewing data from every possible source within its corporate structure. Fortunately, at oral
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argument, counsel for Samsung suggested that any order compelling supplementation apply only to
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the two Apple licensing department employees that Apple previously disclosed to Samsung under
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Rule 26(a). The court agrees that this strikes the appropriate balance between the competing
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concerns of the parties.
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V.
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CONCLUSION
The court GRANTS-IN-PART Samsung’s motion to compel production from Apple. Apple
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shall supplement its response to Interrogatory No. 4 in accordance with the foregoing. Apple may
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limit its response to information supplied to the two licensing department employees identified in
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Apple’s Rule 26(a) disclosure. Samsung shall comply with this order no later than June 7 at noon,
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so that Judge Koh will have access to this information before ruling on Apple’s motion.
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See Acumed LLC v. Stryker Corp., 551 F.3d 1323, 1328 (Fed. Cir. 2008) (“While the fact that a
patentee has previously chosen to license the patent may indicate that a reasonable royalty does
compensate for an infringement, that is but one factor for the district court to consider.”); High
Tech Med. Instr., Inc. v. New Image Inds., Inc., 49 F.3d 1551, 1557 (Fed. Cir. 1995) (finding that a
patentee’s offer of a license “suggests that any injury suffered by HTMI [the patentee] would be
compensable in damages assessed as part of the final judgment in the case”).
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Case No.: 12-CV-00630-LHK (PSG)
ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL
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IT IS SO ORDERED.
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Dated: 6/5/2012
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_________________________________
PAUL S. GREWAL
United States Magistrate Judge
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United States District Court
For the Northern District of California
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Case No.: 12-CV-00630-LHK (PSG)
ORDER GRANTING-IN-PART SAMSUNG’S MOTION TO COMPEL

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